Provisional text
JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
21 June 2017 (*) (1)
(EU trade mark — Opposition proceedings — Application for the EU figurative trade mark GPTech — Earlier EU word marks GP JOULE — Failure to produce before the Opposition Division proof of entitlement to file a notice of opposition — Proof first produced before the Board of Appeal — Failure to take into account — Discretion of the Board of Appeal — Circumstances precluding additional or supplementary evidence from being taken into account — Article 76(2) of Regulation (EC) No 207/2009 — Rules 17(4), 19(2), 20(1) and 50(1) of Regulation (EC) No 2868/95)
In Case T‑235/16,
GP Joule PV GmbH & Co. KG, established in Reußenköge (Germany), represented by F. Döring, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Zaera Cuadrado, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Green Power Technologies, SL, established in Bollullos de la Mitación (Spain),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 9 February 2016 (Case R 848/2015-2), relating to opposition proceedings between GP Joule PV and Green Power Technologies,
THE GENERAL COURT (Seventh Chamber),
composed of V. Tomljenović, President, A. Marcoulli and A. Kornezov (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 10 May 2016,
having regard to the response lodged at the Court Registry on 29 July 2016,
having regard to the change in the composition of the Chambers of the General Court,
having regard to the reassignment of the case to the Seventh Chamber and to a new Judge-Rapporteur,
having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 12 February 2014, Green Power Technologies, SL (‘the trade mark applicant’) filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the following figurative sign, comprising a graphic element, a stylised element, ‘gp’, and the element ‘tech’ juxtaposed to it:
3 The goods and services in respect of which registration was sought are in Classes 9 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.
4 On 14 May 2014, the applicant, GP Joule PV GmbH & Co. KG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the goods in Class 9 and some of the services in Class 42 of the Nice Agreement. The notice of opposition was based on the following earlier trade marks: EU word mark No 8818098, GP JOULE, covering services in Classes 36, 37, 39, 40 and 42, and EU word mark No 9599754, GP JOULE, covering goods in Classes 6, 9 and 19 (‘the earlier marks’). The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
5 In the e-filing form used to lodge the notice of opposition and, in particular, under the heading ‘Entitlement of opponent’, the applicant stated as follows: ‘Owner/Co-Owner/Licencee’, which is an automatic setting that appears on the form (‘e-filing opposition form’).
6 On 5 June 2014, EUIPO informed the parties that the opposition was admissible and set the relevant time limits for the opposition proceedings, including the start date of the adversarial part of the proceedings, namely 11 August 2014, as well as the time limit for submission by the applicant of evidence substantiating its earlier rights, namely 10 October 2014. The following was specified in the explanatory note attached to the communication addressed to the applicant:
– under the heading ‘Information on the proceedings’, paragraph (a)(ii) of the explanatory note states that if the evidence relating to the earlier rights on which the opposition is based is not filed within the prescribed time limit, the opposition will be rejected as unfounded pursuant to Rule 20(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1);
– under that same heading, paragraph (b) of the explanatory note states that once the period of time to file the evidence has expired, the trade mark applicant will have at least two full months to respond to the notice of opposition and that this period can be extended if EUIPO considers it necessary to ensure that the trade mark applicant has the opportunity to respond to the material submitted by the opponent;
– under the heading ‘Important notes’, the explanatory note states that ‘where the opposition is entered in the name of a licensee, it must prove its entitlement showing both that it is a licensee and that it is authorised by the proprietor of the mark to file oppositions’.
7 The applicant failed to submit observations and to produce evidence within the prescribed period, namely by 10 October 2014.
8 On 13 November 2014, the trade mark applicant submitted its observations, in which it claimed, inter alia, that the notice of opposition mentioned GP Joule PV acting as the opponent, whereas the proprietor of the earlier marks, according to the EUIPO database, was a natural person, namely Mr P. The trade mark applicant also put forward arguments seeking to support, in that case, the lack of similarity between the marks at issue and between the goods and services covered by those marks.
9 On 20 February 2015, the applicant submitted observations in response, in which it claimed, inter alia, that it was the exclusive licensee of Mr. P., its CEO, without however producing any proof thereof.
10 On 26 March 2015, the Opposition Division rejected the opposition in its entirety as unfounded, pursuant to Rules 19 and 20 of Regulation No 2868/95, in the version applicable at the material time, on the ground that the applicant had submitted no proof of an existing licence agreement or of any entitlement to file a notice of opposition granted to the applicant by the proprietor of the earlier marks.
11 On 28 April 2015, the applicant filed a notice of appeal against the decision of the Opposition Division.
12 On 15 July 2015, the applicant produced for the first time before the Board of Appeal a statement from Mr P. dated 2 July 2015 in which he declares that he granted the applicant, which was under his management, the exclusive authority to use the earlier marks and to defend them in its own name (‘the statement of 15 July 2015’).
13 By decision of 9 February 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.
14 The Board of Appeal found, in essence, that:
– the applicant sufficiently satisfied the requirements of admissibility under Rule 15(2)(h)(iii) of Regulation No 2868/95 by stating that it was the exclusive licensee of the proprietor of the earlier marks and that it was authorised by the proprietor to file the notice of opposition, even though that was mentioned only in the applicant’s response to the observations of the trade mark applicant of 20 February 2015, because, in fact, in the section of the e‑filing opposition form headed ‘Entitlement of opponent’ it was only possible to select the option ‘Owner/Co-owner/Licencee’; that, however, did not release the applicant from the obligation to substantiate its entitlement to file a notice of opposition under Rule 19(2) of Regulation No 2868/95;
– the Opposition Division clearly and unambiguously requested the applicant to provide evidence substantiating the earlier rights and to produce further material within the prescribed period, namely by 10 October 2014; under those circumstances, according to the Board of Appeal, the Opposition Division rightly rejected the opposition as unfounded pursuant to Rule 20(1) of Regulation No 2868/95;
– the applicant presented the statement of 15 July 2015 for the first time with the statement of grounds of appeal; since no evidence had been produced before the Opposition Division, the statement could not be regarded as ‘additional’ or ‘supplementary’ evidence within the meaning of Rule 50(1) of Regulation No 2868/95, read in conjunction with Article 76(2) of Regulation No 207/2009, and, therefore, the Board of Appeal had no discretion enabling it to accept evidence produced late;
– nonetheless, for the sake of completeness, the Board of Appeal indicated that, even assuming that it had such discretion enabling it to accept material produced late, it would exercise that power by deciding not to take the material into account, on the grounds that (i) there could be no doubt as to the requirements that the applicant had to satisfy within the prescribed period, given that, in such a case, the Board of Appeal’s discretion is restricted, (ii) the applicant provided no legitimate justification for that delay, save for complaining that the EUIPO had failed to inform the applicant that the opposition was deficient, and (iii) the file did not show that there were any circumstances likely to justify the applicant’s delay in the submission of evidence required of it.
Forms of order sought
15 The applicant claims that the Court should:
– alter the contested decision and refuse to register the mark applied for;
– in the alternative, annul the contested decision.
16 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
The claim seeking alteration of the contested decision
17 The applicant is seeking, primarily, to have the contested decision altered and asks the Court to reject the application for registration of the mark applied for.
18 The applicant claims, inter alia, that the mark for which registration is sought, on the one hand, and the earlier marks, on the other hand, are confusingly similar and that registration of the mark applied for must, therefore, be denied under Article 8(1)(b) of Regulation No 207/2009.
19 It should be noted from the outset that the review carried out by the Court is a review of legality. Where there has been an error it may annul the decision of the Board of Appeal and, if it has been applied for in the successful party’s pleadings, alter it. It is not for the Court to register or refuse registration of a mark. Under Article 266 TFEU and Article 65(6) of Regulation No 207/2009, EUIPO is required to take the measures necessary to comply with any judgment ordering annulment that may be given by the EU judicature. It is not for the Court to issue directions to EUIPO, which is required to draw the appropriate inferences from the operative part and grounds of the Court’s judgments (see, to that effect, judgments of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 20 and the case-law cited, and of 14 May 2013, Sanco v OHIM — Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 65 and the case-law cited).
20 Accordingly, in so far as that head of claim asks the Court to order EUIPO not to register the mark applied for, that claim must be dismissed as inadmissible.
21 In so far as that head of claim also asks the Court to apply Article 8(1)(b) of Regulation No 207/2009 itself, it must be recalled that the power of the Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72; see also judgment of 14 May 2013, Representation of a chicken, T‑249/11, EU:T:2013:238, paragraph 67 and the case-law cited). Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72). In the present case, since the Board of Appeal in the contested decision has not adopted any position on the application of Article 8(1)(b) of Regulation No 207/2009, that head of claim must be dismissed.
22 It follows that the applicant’s claim that the Court should alter the contested decision and refuse to register the mark applied for must be rejected.
The claim seeking annulment of the contested decision
23 The applicant puts forward, in essence, two pleas in support of its claim for annulment of the contested decision. The first plea alleges misapplication of the rules governing opposition proceedings and the second plea alleges misapplication of Rule 50(1) of Regulation No 2868/95 and Article 76(2) of Regulation No 207/2009.
The first plea in law, alleging misapplication of the rules governing opposition proceedings
24 By its first plea in law, the applicant submits, in essence, that the Board of Appeal misapplied Rule 17(4) of Regulation No 2868/95, by finding that the Opposition Division allegedly rightly held that the opposition was admissible in accordance with the requirements set out in Rule 15(2)(h)(iii) of the regulation. The applicant submits that, on the one hand, the e-filing opposition form did not allow it to specify whether it was filing the notice of opposition as proprietor or licensee of the earlier rights and, on the other hand, the Opposition Division had not expressly invited the applicant to provide further information in that respect but had merely sent the applicant a general information sheet attached to the letter of 5 June 2014. In addition, the applicant considers that the fact that the Opposition Division had invited the trade mark applicant to submit observations meant, as a general rule, that it took the view that the conditions set out in Rule 20(1) of Regulation No 2868/95 were satisfied and that there was sufficient proof of entitlement to file the notice of opposition. Consequently, the applicant submits that the Board of Appeal wrongly confirmed the Opposition Division’s decision to reject the opposition as unfounded under Rule 20(1) of Regulation No 2868/95, on the ground that it had not proved its entitlement to file the notice of opposition in question. Therefore, according to the applicant, the Board of Appeal also infringed an essential procedural requirement for the purpose of Article 6 of the Convention for the Protection of Human Rights and Fundamental Rights of the European Union, signed in Rome on 4 November 1950, and Article 47 of the Charter of Fundamental Rights of the European Union.
25 EUIPO disputes the applicant’s arguments.
26 It is evident from Title II of Regulation No 2868/95, in the version applicable at the material time, that the procedure for opposition to registration of a trade mark comprises two distinct stages.
27 On the one hand, Rule 17 of the regulation lists the admissibility criteria for opposition and states, in paragraph 4 thereof, that if the notice of opposition does not comply with the provisions of Rule 15(2)(d) to (h) of the regulation, EUIPO is to inform the opponent of that fact by inviting it to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before the time limit expires, EUIPO will reject the opposition as inadmissible. It follows that the stage at which admissibility is examined may lead to the adoption of a decision terminating the proceedings.
28 On the other hand, Rule 18(1) of Regulation No 2868/95 states that ‘when the opposition is found admissible pursuant to Rule 17, [EUIPO] shall send a communication to the parties informing them that the opposition proceedings shall be deemed to commence two months after receipt of the communication’. It is apparent from the wording of Rule 18 of Regulation No 2868/95 that the opposition proceedings themselves, that is, the inter partes stage, commence only when EUIPO has verified that the opposition was admissible and that none of the grounds set out in Rule 17 precluded admissibility (judgment of 18 October 2012, Jager & Polacek v OHIM, C‑402/11 P, EU:C:2012:649, paragraph 49).
29 In the present case, first, it is common ground that the opposition was considered to be admissible, as notified to the parties by EUIPO by letter of 5 June 2014. Consequently, the applicant, as opponent before EUIPO, has no interest in bringing an action against EUIPO’s decision stating that the applicant’s opposition is admissible (see, to that effect, judgment of 18 October 2012, Jager & Polacek v OHIM, C‑402/11 P, EU:C:2012:649, paragraph 56, and Opinion of Advocate General Bot in Jager & Polacek v OHIM, C‑402/11 P, EU:C:2012:424, point 64).
30 In addition, even assuming that the Opposition Division was required, under Rule 17(4) of Regulation No 2868/95, to invite the applicant to submit a ‘statement’ or ‘indications’ concerning its authorisation or entitlement to file the notice of opposition within the meaning of Rule 15(2)(h)(iii) of Regulation No 2868/95, it was in no way obliged to ask the applicant, at that stage in the proceedings, to present evidence in that regard. In fact, pursuant to Rule 19(1) of Regulation No 2868/95, the Opposition Division is to give the opposing party the opportunity to present such evidence at a later stage, after the inter partes stage of the proceedings has commenced, not at the stage where admissibility of the opposition is assessed. Moreover, the second sentence of Rule 20(6) of Regulation No 2868/95 specifies that ‘in no case shall [EUIPO] be required to inform the parties which facts or evidence could be or have not been submitted’. Accordingly, the plea alleging misapplication of Rule 17(4) of Regulation No 2868/95 is not capable of leading to the annulment of the contested decision since the opposition was rejected as unfounded, not as inadmissible, for lack of evidence concerning the applicant’s entitlement to file the notice of opposition.
31 Consequently, this ground must be rejected as in part inadmissible and in part ineffective.
32 Secondly, the applicant first claimed in the present proceedings that the fact that the trade mark applicant was invited to submit its observations meant, as a general rule, that the Opposition Division took the view that the conditions set out in Rule 20(1) of Regulation No 2868/95 were satisfied. However, it is not for the Court to examine that claim, for the first time, in its review of the lawfulness of the contested decision (see judgment of 14 December 2011, Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 63 and the case-law cited).
33 Moreover, that claim has no factual basis. As EUIPO observed in its response, the Opposition Division informed the parties that the opposition had been found admissible and, in its letter of 5 June 2014, set the deadline for presenting evidence substantiating the earlier rights as 10 October 2014. Since the invitation to submit observations was sent by the Opposition Division to the trade mark applicant before the period for presenting evidence substantiating earlier rights had expired, it could in no way mean that the Opposition Division considered that the applicant had proved the existence, validity and scope of protection of the earlier marks or its entitlement to file the notice of opposition.
34 Admittedly, it follows from interpreting Rule 20(1) and (2) of Regulation No 2868/95 together that the communication of the opposing party’s observations to the trade mark applicant may show that, at that stage of the proceedings, EUIPO considers that the opposing party has provided proof of ‘the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition’. However, it is common ground that, in the present case, the applicant submitted no observations and no proof within the prescribed period, namely by 10 October 2014. Moreover, while EUIPO could indeed have rejected the opposition directly on expiry of the prescribed period, without taking further steps in the proceedings, in the absence of any evidence whatsoever from the applicant as to its entitlement to file the notice of opposition, the mere fact that the Opposition Division did take further steps in the proceedings does not vitiate the contested decision.
35 Thirdly, with regard to the alleged breach of the Convention for the Protection of Human Rights and Fundamental Freedoms and Article 47 of the Charter of Fundamental Rights, which relate to the right to effective remedy and to fair trial, suffice it to note that, besides the fact that proceedings before the Boards of Appeal are not judicial in nature (see, to that effect, judgments of 12 December 2002, Procter & Gamble v OHIM (Soap bar shape), T‑63/01, EU:T:2002:317, paragraphs 22 and 23, and of 20 April 2005, Krüger v OHIM — Calpis (CALPICO), T‑273/02, EU:T:2005:134, paragraph 62), the applicant puts forward no specific argument in support of that plea. Accordingly, that head of claim must be rejected.
36 It follows that the present plea must be rejected.
The second plea in law, alleging misapplication of the third subparagraph of Rule 50(1) of Regulation No 2868/95 and Article 76(2) of Regulation No 207/2009
37 The applicant submits that, in so far as the applicant was misled by the e-filing opposition form and the lack of information from the Opposition Division, the Board of Appeal should have accepted the proof of its entitlement to file the notice of opposition as a licensee, namely the statement of 15 July 2015, which was first presented before it. According to the applicant, that statement should be regarded as additional or supplementary evidence within the meaning of Rule 50(1) of Regulation No 2868/95, read in conjunction with Article 76(2) of Regulation No 207/2009, since its entitlement to file the notice of opposition clearly followed from the fact that its company name was identical to that in the earlier marks on which the opposition is based.
38 EUIPO disputes the applicant’s arguments.
39 It should be recalled, at the outset, that the third subparagraph of Rule 50(1) of Regulation No 2868/95 provides that, ‘where the appeal is directed against a decision of an Opposition Division, the Board of Appeal shall limit its examination of the appeal to facts and evidence presented within the time limits set in or specified by the Opposition Division in accordance with the Regulation and these Rules, unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article [76(2) of Regulation No 207/2009]’.
40 Article 76(2) of Regulation No 207/2009 provides that EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.
41 Regulation No 207/2009 thus expressly provides that the Board of Appeal enjoys, when examining an appeal directed against a decision of the Opposition Division, the discretion deriving from the third subparagraph of Rule 50(1) of Regulation No 2868/95 and from Article 76(2) of Regulation No 207/2009 to decide whether or not to take into account additional or supplementary facts and evidence which were not presented within the time limits set or specified by the Opposition Division (judgments of 3 October 2013, Rintisch v OHIM, C‑122/12 P, EU:C:2013:628, paragraph 33; of 3 October 2013, Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraph 32; and of 3 October 2013, Rintisch v OHIM, C‑121/12 P, EU:C:2013:639, paragraph 33).
42 In that context, the Court of Justice has already had the opportunity to observe that the French version of the third subparagraph of Rule 50(1) of Regulation No 2868/95 is different from the Spanish, German and English versions in one fundamental respect. Whereas the latter versions provide that the Board of Appeal must take into consideration only additional or supplementary facts and evidence, the French version describes that evidence as ‘nouveaux ou supplémentaires’ (new or supplementary) (judgment of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraph 23).
43 Based on the purpose and general scheme of the regulation, of which that provision forms part, and, in particular, Article 76(2) of Regulation No 207/2009, which constitutes the legal basis for Rule 50(1) of Regulation No 2868/95, the Court of Justice concluded that, with regard to proof of use of a mark, when no proof thereof is submitted within the time limit set by EUIPO, the opposition must automatically be rejected by EUIPO. However, when evidence is produced within the time limit set by EUIPO, the production of supplementary evidence remains possible (see, to that effect, judgment of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraphs 24 to 26 and the case-law cited).
44 The Court of Justice has pointed out that Article 76(2) of Regulation No 207/2009 should be interpreted in the same way in relation to proof of the existence, validity and scope of protection of a trade mark, since that provision contains a rule which applies horizontally within the scheme of that regulation, inasmuch as it applies irrespective of the nature of the proceedings concerned. It follows that Rule 50 of Regulation No 2868/95 cannot be interpreted as meaning that it extends the discretion of the Boards of Appeal to new evidence (judgment of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraph 27), but only to evidence ‘additional’ or ‘supplementary’ to relevant evidence which was lodged within the time limit set (see judgment of 11 December 2014, CEDC International v OHIM — Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraph 89 and the case-law cited).
45 Accordingly, it must be determined whether the statement of 15 July 2015, first presented before the Board of Appeal, may be characterised as ‘additional’ or ‘supplementary’ within the meaning of the third subparagraph of Rule 50(1) of Regulation No 2868/95 and Article 76(2) of Regulation No 207/2009, as interpreted by the case-law cited in paragraphs 41 to 44.
46 It is established that the applicant presented no proof of its entitlement to file the notice of opposition under Rule 19(2) of Regulation No 2868/95, whether before the set time limit expired or, moreover, at any time in the proceedings before the Opposition Division, notwithstanding the fact that, as noted in paragraph 6 above, EUIPO had clearly informed the applicant that it had to present material to prove (i) its capacity of licensee and (ii) that it was authorised by the proprietor of the earlier marks to file the notice of opposition. In addition, it is common ground between the parties that no entry was made in the EUIPO register under Article 22 of Regulation No 207/2009 in respect of the grant of a licence for the earlier marks.
47 Furthermore, the language used in the applicant’s observations of 20 February 2015, that it was the exclusive licensee of the proprietor of the earlier marks, is nothing more than a mere assertion that is not supported by any evidence. In those circumstances, the statement of 15 July 2015 cannot be considered to be evidence ‘additional’ or ‘supplementary’ to evidence already submitted by the applicant.
48 With regard to the applicant’s claim that its entitlement to file the notice of opposition clearly followed from the fact its company name was identical to that in the earlier marks on which the opposition is based, suffice it to note, as EUIPO has, that it cannot be inferred from that circumstance that the applicant was entitled to do so. The mere fact that a sign coincides, whether in whole or in part, with the company name of an undertaking may be due to various circumstances in the course of business and clearly cannot replace documentary evidence such as a licence agreement, establishing both its capacity of licensee and the scope of its rights. In that regard, the rights of a licensee may be subject to various restrictions relating, inter alia, to the goods and services covered by the licence at issue, the territory for which the licence was granted and the conditions of authorisation to file an opposition.
49 Accordingly, the Board of Appeal rightly found that the statement of 15 July 2015 could not be characterised as ‘additional’ or ‘supplementary’ evidence and, therefore, could not be taken into account under the third subparagraph of Rule 50(1) of Regulation No 2868/95 and Article 76(2) of Regulation No 207/2009, as interpreted by the case-law cited in paragraphs 41 to 44.
50 The applicant’s second plea must therefore be rejected as unfounded.
51 Moreover, even assuming that the statement of 15 July 2015 were to be regarded as ‘additional’ or ‘supplementary’ evidence that can be taken into account under the third subparagraph of Rule 50(1) of Regulation No 2868/95 and Article 76(2) of Regulation No 207/2009, as interpreted by the aforementioned case-law, it must be found that the Board of Appeal correctly exercised its discretion under Article 76(2) of Regulation No 207/2009.
52 It is settled case-law that where EUIPO is called upon to give judgment in the context of opposition proceedings, taking into account facts or evidence produced late is particularly likely to be justified where EUIPO considers, first, that the material which has been produced late is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (see judgment of 3 October 2013, Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraph 38 and the case-law cited).
53 However, the Board of Appeal is not required, when exercising its discretion under Article 76(2) of Regulation No 207/2009, to examine the three criteria when one of those criteria alone is sufficient to establish that it must not take into account the evidence that has been submitted late (see judgment of 3 October 2013, Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraph 44 and the case-law cited; judgment of 17 June 2008, El Corte Inglés v OHIM — Abril Sánchez and Ricote Saugar (BoomerangTV), T‑420/03, EU:T:2008:203, paragraphs 42 and 43).
54 In that respect, the circumstances surrounding the late submission of evidence by the applicant are an aspect that may be taken into account by EUIPO in exercising its discretion under Article 76(2) of Regulation No 207/2009; in the present case that discretion had to be exercised restrictively by the Board of Appeal (see, to that effect, judgment of 3 October 2013, Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraph 39).
55 In the present case, it must be noted, first, that EUIPO found that there was no justification for the late submission of the evidence at issue, since the requirements relating to evidence substantiating the opposition were clear. As pointed out in paragraph 6 above, the explanatory note attached to the EUIPO’s communication to the applicant of 5 June 2014 stated, in particular, that where the opposition is entered in the name of a licensee, it must prove its entitlement showing both that it is a licensee and that it is authorised by the proprietor of the mark to file a notice of opposition.
56 Secondly, it is established that the applicant put forward no grounds justifying its delay in producing the relevant evidence, other than the alleged misleading nature of the application form. Even if the form were confusing, here, the applicant failed to exercise all the diligence required of a normally experienced trader. In fact, suffice it to note in that respect that the requirements as to proof of entitlement to file a notice of opposition clearly derive from the very wording of Rule 19(2) of Regulation No 2868/95 and that the consequences of non-compliance with those requirements are expressly set out in Rule 20 of the regulation. Furthermore, in its communication of 5 June 2014, the Opposition Division indicated to the parties the time limits applicable to the opposition proceedings.
57 The Board of Appeal was, therefore, entitled to refuse to take into account the statement of 15 July 2015, after expiry of the time limit set in that regard by the Opposition Division, without examining whether such proof was relevant and sufficient.
58 In the light of the foregoing, the action must be dismissed as in part inadmissible and in part unfounded.
Costs
59 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
60 In the present case, since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders GP Joule PV GmbH & Co. KG to pay the costs.
Tomljenović | Marcoulli | Kornezov |
Delivered in open court in Luxembourg on 21 June 2017.